UK: Colours as Trade Marks

Using colours to promote a company’s products is not a new concept, and colour is often central to a product’s branding. But to what extent can businesses protect the colours of their products through trade marks?

On 21 October the European Court of Justice (ECJ) handed down its judgment in KWS Saat AG v Office for Harmonisation in the Internal Market, which concerned the ability to register a single colour as a Community Trade Mark (CTM).

The case had been long awaited since judgment was delivered by the same court in Libertel Groep v Benelux-Markenbureau in May 2003. In that case the court had rejected an application by Libertel, part of Vodafone Netherlands, to register the colour orange for certain telecommunications goods and services, because the applicant had failed to demonstrate that the mark had acquired distinctive character through use.

The present case concerned an request by KWS Saat, a German company, for a CTM for the colour orange to apply to its various products and services related to treatment installations for seeds, and to certain agricultural, horticultural and forestry products.

The application was rejected by the CTM examiner and the Office for Harmonisation in the Internal Market (OHIM) Second Board of Appeal, but the EU’s Court of First instance (CFI) found that orange enabled people to distinguish KWS Saat’s services from those of other firms, because a service, by its very nature, has no colour. However, it said people would be unable to distinguish the applicant’s goods from those in similar shades of orange with a different commercial origin because seeds were often artificially coloured.

Before continuing, it is worth pointing out some of the grounds on which a trade mark can be denied registration. Articles 7(1)(a), (b), (c), (d) and 7(3) of Regulation 40/94, which governs the registration of CTMs states that:

The CFI’s refusal to allow the registration of the colour orange for goods centred on Article 7(1)(b).

The company then appealed to the ECJ, the ultimate arbiter for interpreting the European Trade Marks Directive, regarding its application for protection in the goods and product classes refused by the CFI. There were four grounds on which the company based its appeal, and each ground was rejected in turn by the Court as being inadmissible, inoperative and/or unfounded.

KWS Saat submitted that the distinctive character of trade marks consisting of one colour must be assessed according to the same standards as the distinctive character of other marks, particularly word and figurative marks, and that more stringent criteria must not be imposed. The company argued that the CFI had applied more stringent criteria for colour marks than for other types of marks.

The ECJ rejected this ground of appeal on the basis that the relevant public’s perception is not necessarily the same in the case of a sign composed of a colour as such as it is in the case of a word or figurative mark, where the sign is independent of the appearance of the goods identified by it. While the public is used to perceiving word or figurative marks immediately as signs identifying commercial origin, the same is not necessarily true where the sign forms part of the external appearance of the goods.

The Court reaffirmed Libertel when it held that a colour could acquire a distinctive character through use, but that distinctiveness without prior use was inconceivable except in very rare circumstances.

Because single colours possess low distinctiveness, a colour does not inherently function as a source-identifier and, consequently, a colour must earn its right to trade mark protection in the UK in the same way as descriptive words.

This case confirms a long line of cases that have held that colours will be registrable as trade marks only once distinctiveness through use has been proven. It endorses the possibility of registering colours as trade marks but restrains that protection with a high distinctiveness requirement.

Applicants must therefore show that they have used one colour on a product long enough for the public to associate it with their brand.

The decision sends out a clear message: companies need to use more ingenuity and imagination when it comes to promoting and protecting their brands. They must recognise that colour will only acquire distinctiveness, and thus the right to acquire trade mark protection, over time through public familiarity generated by extensive promotions and advertising.